RE: #1539 proposed resolution: Incoming 5.1 and 5.3: Language referring to contributors' sponsors

[Black_David at emc.com]

Harald,

> > This is close (and I'd like to hear Jorge's opinion), but I'm
> > concerned that "work for hire" may escape.  The failure mode of
> > concern is that an individual Contributor covered by "work for
> > hire" grants a copyright license that doesn't bind the employer
> > (owner of the copyright).  The resulting copyright license may
> > be simultaneously valid (no legal defects) and vacuous (doesn't
> > do anything because the Contributor doesn't control the copyright).
> > It's not clear to me whether the proposed "obtained the necessary
> > permissions" language in 5.1 is sufficient to block this "valid
> > and vacuous" copyright license scenario.
> >
> > While I know what we would like, I think it's more important to
> > have our legal expert (Jorge) tell us what will actually get the
> > job done, and hence I'm not going to propose alternate language
> > in this message.
> >   
> At the moment, in the absence of a continuous dialogue with legal
> counsel, I think the best we can do is to make text that explains to
> *us* what we want.
> 
> We do have a problem with "valid and vacuous" - what I think the
> language is intended to do is to say that if we get into this 
> problem - the contributor has lied to us.

I think the goal should not just be that the contributor "lied"
but rather that the contributor "deliberately lied" and "knowingly
lied" - i.e., not only did the Contributor fail to carry out his/her
obligation, but the Contributor also knew or should have known (i.e.,
a reasonable person would have known) that s/he had an obligation.

Beyond this, we want the owner of the rights under work-for-hire
to be held responsible for the Contributor's lie if possible -
this won't always be possible, e.g., if the relationship has
lapsed.  If we set a high enough bar for the misbehavior required,
the consequences should reach back through contractual, employment,
etc. relationships.  If this is successful, the resulting ability
to hold the rights owner responsible is what substitutes for the
proposed-to-be-removed language that obtains a copyright
license from the represented or sponsoring organization.  This
new approach has the advantage of doing something useful in the
presence of a lapsed work-for-hire relationship.

> Another stab at expressing what we want, making it explicit that
> work-for-hire is included, so that we can discuss with counsel how to
> get a lawyer or judge to understand it the way we want it to 
> be understood:

[... snip ...]

>   The Contributor is further deemed to have agreed that he/she has
>   obtained the necessary permissions to enter into such an agreement
>   from any party that the Contributor reasonably and personally knows
>   may have rights in the Contribution, including, but not limited
>   to, the Contributor's sponsor, employer or contractor in a
>   work-for-hire relationship.

Expansion for more clarity (at least for us):

... including, but not limited to,
the Contributor's sponsor, employer or contractor who possesses
rights in the Contribution via a work-for-hire relationship.

This is skating sufficiently close to the line of what will vs.
won't work that I will need to ask EMC's counsel to review and
comment after the first of the year.

Thanks,
--David
----------------------------------------------------
David L. Black, Distinguished Engineer
EMC Corporation, 176 South St., Hopkinton, MA  01748
+1 (508) 293-7953             FAX: +1 (508) 293-7786
black_david at emc.com        Mobile: +1 (978) 394-7754
----------------------------------------------------

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